The Oberweis Group, Inc.(Delaware Corporation) v. Pavol Icik / Poste restante
Claim Number: FA1405001561445
Complainant is The Oberweis Group, Inc.(Delaware Corporation) (“Complainant”), represented by Richard S. Stockton of Banner & Witcoff, Ltd., Illinois. Respondent is Pavol Icik / Poste restante (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oberweissdairy.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2014; the National Arbitration Forum received payment on May 27, 2014.
On June 1, 2014, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <oberweissdairy.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 5, 2014, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of June 25, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oberweissdairy.com. Also on June 5, 2014, the Slovak language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
i. Complainant, The Oberweis Group, Inc.(Delaware Corporation), is a well-known purveyor of food and beverage products, including but not limited to ice cream and other dairy products.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the OBERWEIS DAIRY mark (e.g., Reg. No. 2,325,294, registered March 7, 2000).
iii. The disputed domain name is confusingly to Complainant’s OBERWEIS DAIRY mark.
2. Policy ¶ 4(a)(ii)
i. Respondent has no rights or legitimate interests in respect of the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. The disputed domain name is used in connection with a website featuring links to advertising for products and services that are either different from or compete with Complainant’s products and services.
3. Policy ¶ 4(a)(iii)
i. Respondent registered and is using the disputed domain name in bad faith.
ii. Respondent is using the disputed domain name to redirect Internet users to a website featuring third-party links to websites that offer products and services that compete with Complainant’s food products and services.
iii. Respondent is using the <oberweissdairy.com> domain name to intentionally attract, for commercial gain, Internet users to its webpages.
iv. Respondent had actual knowledge of Complainant’s OBERWEIS DAIRY mark at the time it registered the disputed domain name.
v. Respondent has engaged in typosquatting.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
2. The Panel notes that the disputed domain name was registered on December 21, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Slovak, thereby making the language of the proceedings in Slovak. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.
Complainant contends that it is a well-known purveyor of food and beverage products, including but not limited to ice cream and other dairy products. Complainant argues that it owns trademark registrations with the USPTO for the OBERWEIS DAIRY mark (e.g., Reg. No. 2,325,294, registered March 7, 2000). See Complainant’s Exhibit 4. The Panel notes that although Respondent resides in Slovakia, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country of Respondent’s residence. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Consequently, the Panel finds that Complainant’s registration of the OBERWEIS DAIRY mark with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <oberweissdairy.com> domain name is confusingly to Complainant’s OBERWEIS DAIRY mark. The Panel notes that Respondent added an additional letter “s” to Complainant’s mark in the disputed domain name. The Panel concludes that Respondent’s inclusion of an additional letter is inconsequential to a Policy ¶ 4(a)(i) determination. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel observes that Respondent removes the space in Complainant’s OBERWEIS DAIRY mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel holds that Respondent’s elimination of spaces and addition of a gTLD does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Consequently, the Panel finds that Respondent’s <oberweissdairy.com> domain name is confusingly to Complainant’s OBERWEIS DAIRY mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <oberweissdairy.com> domain name. The Panel notes that the WHOIS information reveals that “Pavol Icik / Poste restante” is the registrant of the disputed domain name. See Complainant’s Exhibit 16. The Panel observes that Respondent has not provided any evidence that it is known by the disputed domain name. Thus, the Panel determines that Respondent is not commonly known by the <oberweissdairy.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant claims that Respondent’s <oberweissdairy.com> domain name is used in connection with a website featuring links to advertising for products and services that are either different from or compete with Complainant’s products and services. The Panel observes that Respondent uses its disputed domain name to provide third-party links such as “Ice Cream Makers Lowers,” “Ice cream,” “Crave Frozen Yogurt,” and more. See Complainant’s Exhibit 18. In ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), the panel rejected respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Thus, the Panel finds that Respondent is not using the <oberweissdairy.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that Respondent is using the <oberweissdairy.com> domain name to redirect Internet users to a website featuring third-party links to websites that offer products and services that compete with Complainant’s food products and services. The Panel observes that Respondent uses its disputed domain name to provide third-party links such as “Ice Cream Makers Lowers,” “Ice cream,” “Crave Frozen Yogurt,” and more. See Complainant’s Exhibit 18. Complainant argues that Respondent’s use of the disputed domain name is disruptive to Complainant’s business. The Panel holds that Respondent’s <oberweissdairy.com> domain name disrupts Complainant, showing bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent is using the <oberweissdairy.com> domain name to intentionally attract, for commercial gain, Internet users to its web pages. The Panel observes that Respondent uses its disputed domain name to provide third-party links such as “Skinny Cow Ice Cream,” “Silk Fruity & Creamy,” “Ice Cream and Frozen Yogurt,” and more. See Complainant’s Exhibit 18. The Panel notes that Respondent presumably commercially benefits through its use of the disputed domain name. Thus, the Panel holds that Respondent has registered and is using the <oberweissdairy.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant alleges that Respondent had actual knowledge of Complainant’s OBERWEIS DAIRY mark at the time it registered the <oberweissdairy.com> domain name. Complainant also contends that Respondent had constructive knowledge of Complainant’s OBERWEIS DAIRY mark through its USPTO trademark registrations. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the <oberweissdairy.com> domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”)
Complainant states that Respondent has engaged in typosquatting. The Panel notes that Respondent adds an additional letter “s” to the OBERWEIS DAIRY mark in the <oberweissdairy.com> domain name. In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel held that “Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” Therefore, the Panel finds that Respondent has engaged in typosquatting, showing bad faith use and registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oberweissdairy.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 11, 2014
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